HCA International Limited

Trademark Trial and Appeal Board

Jan 17, 2013

No. 85103030 (T.T.A.B. Jan. 17, 2013)

Mailed: January 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re HCA International Limited
________

Serial No. 85103030
_______

Stephen A. Zemanick of Dorsey & Whitney LLP for HCA International Limited.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
_______

Before Seeherman, Lykos and Gorowitz, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

HCA International Limited (“applicant”) filed an application to register the
mark displayed below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85103030
2
on the Principal Register for various goods and services in International Classes 16,
36, 42, and 44.1
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground
that the mark is merely descriptive of applicant’s identified goods and services.
During ex parte prosecution, applicant conceded that the wording in its mark
is merely descriptive and disclaimed the phrase "A MEMBER OF THE LEADERS
IN ONCOLOGY CARE NETWORK" apart from the mark as shown. Thus, the sole
issue on appeal is whether the stylization or design elements of applicant’s mark
render it inherently distinctive.
Applicant argues that the sizing of the wording, variations in capitalization
and use of bold type text within its mark create a distinctive commercial impression
apart from the disclaimed wording. The examining attorney, however, maintains
that “the mark appears in ordinary and non-distinctive font,” and that “the impact
of the stylization of the lettering is lost in the descriptive significance of the
wording.” Appeal Brief, unnumbered p. 6.
It is well settled that when words which are merely descriptive, and hence
unregistrable, are presented in a distinctive design, the design may render the
mark as a whole registrable, provided that the words are disclaimed, under Section
6 of the Trademark Act. See In re Venturi, Inc., 197 USPQ 714 (TTAB 1977); In re
Jackson Hole Ski Corp., 190 USPQ 175 (TTAB 1976) (“Jackson Hole”). Both
applicant and the examining attorney have discussed in their briefs various cases

1 Serial No. 85103030, filed August 9, 2010, pursuant to Sections 1(b) and 44(e).
Serial No. 85103030
3
involving this issue.2 See, e.g., In re Sambado & Son, Inc., 45 USPQ2d 1312 (TTAB
1997); In re Bonni Keller Collections, Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987); In re
American Academy of Facial Plastic Reconstructive Surgery, 64 USPQ2d 1748
(TTAB 2002). While acknowledging that inquiries of this type are subjective and
fact specific, here we find the Jackson Hole case to be analogous. In that case,
applicant applied to register the mark shown below

with a disclaimer of the wording JACKSON HOLE. The examining attorney
refused registration of the mark as primarily merely geographically descriptive.
The Board reversed the refusal to register, agreeing with the applicant’s position
that “its mark consists not only of the mere geographical designation but also of the
letters ‘JH’ displayed in a distinctive and prominent fashion so as to create a
commercial impression in and of themselves...” Jackson Hole, 190 USPQ at 176. In
particular, the Board noted
that the letters “JH” are twice the size of the other letters; that unlike
any of the other letters, they are partly joined together, creating the
visual impression of a monogram; and that they are set down from the

2 For a thorough analysis of this issue and review of various marks consisting of descriptive
wording shown in stylized lettering, see In re Sadoru Group, Ltd., __ USPQ2d __ (TTAB
2012).
Serial No. 85103030
4
rest of the letters, which positioning has the effect of highlighting the
“JH” couplet.

Id.
Similarly, in the mark before us, we find that the vertical arrangement in
bold text of each of the initial letters of the main words in the phrase “LEADERS IN
ONOCOLOGY CARE” – the “L,” “O” and “C” – to be prominent and striking, to such
a degree that they create a separate and inherently distinctive commercial
impression consisting of the acronym “LOC.”
The determination regarding whether stylization is sufficient to carry a mark
is “in the eyes of the beholder,” Jackson Hole, 190 USPQ at 176, and “a necessarily
subjective one.” In re Bonni Keller Collections, Ltd., 6 USPQ2d at 1227. We find
that the impression conveyed by applicant’s mark includes the prominent display of
“LOC” as an acronym, and that this impression is separate from the disclaimed
wording in the mark. The examining attorney did not submit any evidence that
“LOC” is a commonly recognized descriptive acronym, so based on the record before
us we can conclude that it is a coined term. As such, we find the mark as a whole to
be inherently distinctive.
Decision: The refusal to register under Section 2(e)(1) is reversed.